Recent Blog Posts

Tradeshow Catalog Qualifies as Prior Art
Update: On November 1, 2018, the CAFC issued a modified opinion and an order denying Contour’s petition for rehearing en banc. The modified opinion is consistent with the original petition, discussed below, insofar as the PTAB decision was vacated and remanded, but adds the following statement at page 8: “When direct availability to an ordinarily skilled artisan is no longer viewed as dispositive, the undisputed record evidence compels a conclusion that the GoPro Catalog is a printed publication as a...More

Petitioner Failed to Show That Patent Owner’s Drug Product Package Insert Was a Printed Publication
On February 9, 2018, the PTAB denied Sandoz Inc.’s petition for inter partes review of U.S. Patent No. 9,512,216, a patent owned by AbbVie Biotechnology Ltd. The patent recites methods for treating moderate-to-severe chronic plaque psoriasis with adalimumab, a human anti-tumor necrosis factor α (TNFα) antibody. The methods of the claimed invention involve subcutaneously administering to a patient an initial dose of 80 mg of adalimumab, followed by 40 mg of adalimumab every other week starting one week after the...More

CAFC Hears IPR Appeal From Parties That Were Time-Barred From Filing Petition
Research Corporation Technologies, Inc. (RCT) sued Mylan Pharmaceuticals, Inc. (Mylan), Breckenridge Pharmaceutical, Inc. (Breckinridge), and Alembic Pharmaceuticals Ltd. (Alembic), in federal district court, accusing them of infringing United States Reissued Patent No. RE38,551. The patent claims pharmaceutical compositions useful in the treatment of epilepsy and other central nervous system disorders. Within one year of being served with the infringement complaint, Breckenridge alone petitioned the PTAB to institute inter partes review of the patent, but the PTAB denied the petition on...More

CAFC: PTAB Abused Its Discretion When It Refused to Admit Expert’s Trial Testimony
In Ultratec, Inc. v. CaptionCall, LLC, No. 2016-1706 (Fed. Cir. Aug. 28, 2017), the Federal Circuit vacated and remanded multiple IPR decisions where the PTAB failed to consider material evidence and failed to explain its decisions to exclude the evidence.
Ultratec and CaptionCall are currently litigating in both district court and before the PTAB. Ultratec sued CaptionCall for infringement in the Western District of Wisconsin where a jury found the patents infringed and not invalid. Five months after the verdict, the...More

Kyle Bass Gets Fresenius’ Diprivan Claims Canceled in IPROn June 7, 2017, the PTAB issued a final written decision in IPR 2016-00254 canceling claims in a Fresenius Kabi USA, LLC (Fresenius) patent covering Diprivan®. The PTAB instituted the IPR in response to a petition filed by hedge fund manager Kyle Bass and his colleague Erich Spangenberg. Diprivan® is the commercial name for propofol, an intravenous anesthetic agent used during surgery and other medical procedures.
The Fresenius patent claims pharmaceutical formulations of propofol that are stored in containers having nonreactive,...More

One-Year Time Bar Does Not Apply to a Request for Joinder of IPR Proceedings
Teva Pharmaceuticals USA, Inc. (“Teva”) filed a Petition, seeking an IPR of claims 1–20 of Allergan’s U.S. Patent No. 8,642,556. [IPR2017-00579, Paper No. 9] Along with the Petition, Teva filed a Motion for Joinder to join Mylan Pharmaceuticals Inc. v. Allergan, Inc., IPR2016-01129. This blog has previously reported on the topic of joinder in IPR Petitions here and here.
Teva’s Petition was not timely, having been filed more than one year after Allergan filed a complaint alleging infringement of the ‘556...More

Coalition for Affordable Drugs Fails to Knock Out Biogen’s Tecfidera® Patent
On March 21, 2017, the PTAB refused to cancel claims of a Biogen MA Inc. (Biogen) patent covering multiple sclerosis drug Tecfidera® during IPR2015-01993, which was instituted in response to a petition filed by the Coalition for Affordable Drugs V LLC (CFAD), a group started by hedge fund manager Kyle Bass.
Biogen’s U.S. Pat. No. 8,399,514 claims methods of treating patients for multiple sclerosis (MS). Each claim requires the administration of a dose of about 480 milligrams (mg) per day of...More

Your Supplemental Evidence is Timely, but is it Relevant to a Claim at Issue? PTAB Will Decide.Once a trial has been instituted at the PTAB, a party seeking consideration of supplemental evidence may file a motion in accordance with the following requirements: (1) the request for the authorization to file a motion to submit supplemental information must be made within one month of the date the trial was instituted; and (2) the supplemental information must be relevant to a claim for which the trial was instituted. 37 C.F.R. § 42.123(a). Mere satisfaction of these requirements for...More

Federal Circuit to PTAB (Again) – Explain Yourself!!
The Federal Circuit has once again vacated and remanded a PTAB final written decision on the basis that the PTAB did not adequately explain its reasons for finding a claimed invention obvious. In In re Nuvasive, Appeal No. 15-1670 (Fed. Cir. Dec. 7, 2016), the Federal Circuit reviewed the PTAB’s final written decision in IPR2013-00506 that concluded various claims of NuVasive, Inc’s U.S. Patent No. 8,361,156 were invalid as obvious over a combination of prior art references. The patent claims...More

Prior Art Made Available at Members Only Gatherings May Not Satisfy “Publically Accessible” RequirementOn July 27, 2018, the Federal Circuit issued an opinion vacating the GoPro, Inc. decision discussed in the post below.
On June 11, 2018, the Federal Circuit issued a decision vacating and remanding the Medtronic decision discussed in the post below.
An updated discussion of the Medtronic decision is available here:
PTAB Failed to Properly Apply Test for Printed Publication
Two recent PTAB decisions highlight important developments in qualifying a publication as a reference, available as prior art. In one case, the PTAB concluded that...More